ORDER OF THE GENERAL COURT (Seventh Chamber)
21 September 2018 (*)
(EU trade mark — Procedure — Taxation of costs)
In Case T‑450/13 DEP,
CEDC International sp. z o.o., established in Oborniki Wielkopolskie (Poland), represented by M. Siciarek, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being
Fabryka Wódek Polmos Łańcut S.A., established in Łańcut (Poland), represented initially by A. Gorzkiewicz and D.E. Rzążewska, and subsequently by T. Grucelski and D.E. Rzążewska, lawyers,
APPLICATION for taxation of costs, following the judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT VODKA) (T‑450/13, not published, EU:T:2015:841)
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović (Rapporteur), President, A. Dittrich and J. Schwarcz, Judges,
Registrar: E. Coulon,
makes the following
Order
Background to the dispute and procedure
1 By application lodged at the Court Registry on 23 August 2013, the applicant, CEDC International s.p. z o.o, challenged the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 June 2013 (Case R 1734/2011-4), relating to opposition proceedings between itself and Fabryka Wódek POLMOS Łańcut S.A., the intervener.
2 The intervener intervened in support of the form of order sought by EUIPO in the main proceedings. It contended that the Court should dismiss the action and order the applicant to pay the costs.
3 By judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT) (T‑450/13, not published, EU:T:2015:841), the Court annulled the decision of the Fourth Board of Appeal and, on the basis of Article 134(1) of the Rules of Procedure of the General Court, ordered EUIPO and the intervener to bear their own costs and to pay the costs incurred by the applicant. That judgment has not been the subject of an appeal.
4 By letter of 28 July 2016, the applicant demanded payment by the intervener of the total sum of 82 495.56 Polish zlotys (PLN) (approximately EUR 19 496.50) in respect of the costs of the proceedings before the Court in Case T‑450/13 and in Case T‑449/13. In the latter proceedings, by judgment of 12 November 2015, the Court annulled the decision of the Fourth Board of Appeal of EUIPO of 10 June 2013 (Case R 33/2012-4) relating to invalidity proceedings between the applicant and the intervener.
5 By letter of 8 August 2016, the intervener disputed the amount of the costs and offered to pay the total sum of PLN 15 000 (approximately EUR 3 545.01) in respect of costs incurred in the main proceedings in Cases T‑449/13 and T‑450/13.
6 By letter of 2 November 2016, the applicant offered to set the costs incurred in the main proceedings in the present case and in Case T‑449/13 at the total sum of PLN 67 000 (approximately EUR 15 834.38).
7 By emails of 30 March and 25 May 2017, the intervener offered to pay the sum of PLN 20 000 (approximately EUR 4 726.68). That amount included, in addition to the costs incurred in the present case and in Case T‑449/13, the costs relating to the proceedings before EUIPO, which were set by the decisions of the Fourth Board of Appeal at EUR 1 200 and EUR 1 700.
8 By letter of 14 June 2017, the applicant informed the intervener that it rejected the offer to pay PLN 20 000 in respect of all of the proceedings and that it demanded payment of the sum of PLN 67 000 in respect of the costs incurred in the proceedings before the Court in the present case and in Case T‑449/13.
9 By document lodged at the Court Registry on 17 October 2017, the applicant made an application for taxation of costs under Article 170(1) of the Rules of Procedure, by which it requested that the Court fix the amount of recoverable costs to be reimbursed in respect of the proceedings which gave rise to the judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT VODKA) (T‑450/13, not published, EU:T:2015:841) at PNL 33 500 (approximately EUR 7 917.19), together with default interest from the date of service of the order of the Court until the date of actual payment at the rate set by the European Central Bank (ECB) for its principal refinancing operations in force during that period, increased by three and a half percentage points.
10 By letter lodged at the Court Registry on 11 December 2017, the intervener submitted its observations on the application for taxation of costs. It contends that the amount claimed by the applicant should be reduced.
11 By a measure of organisation of procedure of 6 June 2018, adopted pursuant to Article 89 of the Rules of Procedure, read in conjunction with Article 170 of those rules, the Court communicated to EUIPO the application for taxation of costs and the intervener’s observations, and set a deadline for EUIPO to submit its observations.
12 By letter of 20 June 2018, EUIPO submitted its observations on the applicant’s application for taxation of costs.
Law
Preliminary observations
13 Under Article 170(1) to (3) of the Rules of Procedure, where there is a dispute concerning the costs to be recovered, the Court is, at the request of the party concerned, to give its decision by way of an order from which no appeal is to lie, after giving the party concerned by the application an opportunity to submit its observations.
14 According to Article 140(b) of the Rules of Procedure, the expenses necessarily incurred by the parties for the purposes of the proceedings, in particular the travel and subsistence expenses and the remuneration of agents, advisers or lawyers, are regarded as recoverable costs. It is clear from that provision that recoverable costs are limited, first, to those incurred for the purpose of the proceedings before the General Court and, secondly, to those which were necessary for that purpose (see order of 17 March 2016, Norma Lebensmittelfilialbetrieb v OHIM — Yorma’s (Yorma Eberl), T‑229/14 DEP, not published, EU:T:2016:177, paragraph 9 and the case-law cited).
15 With regard to lawyers’ fees, it should be observed that, according to a consistent line of case-law, the Courts of the European Union are not empowered to tax the fees payable by the parties to their own lawyers, but may determine the amount of those fees which may be recovered from the party ordered to pay the costs. When ruling on an application for taxation of costs, the Court is not obliged to take account of any national scale of lawyers’ fees or any agreement in that regard between the party concerned and his agents or advisers (see order of 12 January 2016, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13 DEP, not published, EU:T:2016:9, paragraph 12).
16 It is also settled case-law that, in the absence of provisions laying down fee scales, the Court must make an unfettered assessment of the facts of the case, taking into account the subject matter and nature of the proceedings, their significance from the point of view of EU law, the difficulties presented by the case, the amount of work generated by the case for the agents or advisers involved and the financial interest that the parties had in the proceedings (see order of 12 January 2016, ANGIPAX, T‑368/13 DEP, not published, EU:T:2016:9, paragraph 13 and the case-law cited).
17 Finally, in fixing the recoverable costs, the Court is required to take account of all the circumstances of the case up to the making of the order on taxation of costs, including expenses necessarily incurred in relation to the taxation of costs proceedings (order of 12 January 2016, ANGIPAX, T‑368/13 DEP, not published, EU:T:2016:9, paragraph 14 and the case-law cited).
18 The amount of the costs recoverable in the present case must be determined in accordance with those considerations.
19 It is apparent from the application for taxation of the applicant’s costs that the recoverable costs which it seeks to have reimbursed by the intervener comes to PLN 33 500 (approximately EUR 7 917.19). More specifically, the applicant submits that the total amount of the costs incurred in the main proceedings in the present case and in Case T‑449/13 comes to PLN 67 000 and thus seeks to recover half of that amount in respect of the main proceedings in the present case. Furthermore, by its application for taxation of the costs, registered under case number T‑449/13 DEP, the applicant also asks the Court to set the costs relating to the proceedings before the Court in Case T‑449/13 at PLN 33 500.
20 The costs relating to the proceedings before the Court in the present case and in Case T‑449/13, which the applicant seeks to have reimbursed, are broken down as follows:
– analysis of the decision of the Fourth Board of Appeal of EUIPO of 10 June 2013 in Case R 1734/2011-4 concerning EU trade mark No 7044472, and preparing and lodging the application for annulment before the Court, for a total sum of PLN 15 708.74;
– analysis of the decision of the Fourth Board of Appeal of EUIPO of 10 June 2013 in Case R 33/2012-4 concerning EU trade mark No 5142039, and preparing and lodging the application for annulment with the Court, for a total sum of PLN 2 098.58;
– analysis of the communications from the Court of 6 September 2013 concerning the designation of the language of the case, putting in order the application in Cases T‑449/13 and T‑450/13, and preparing and submitting to the Court the observations of 23 September 2013 relating to the language of the case in both sets of proceedings, for a total sum of PLN 2 432.93;
– analysis of and commenting on the communications from the Court of 9 October 2013 concerning the observations of the parties in respect of the language of the case in Cases T‑449/13 and T‑450/13, for a total sum of PLN 789.68;
– analysis of the responses of OHIM (now EUIPO) and of Fabryka Wódek POLMOS Łańcut S.A. (intervener) in the applications for annulment submitted in Cases T‑449/13 and T‑450/13, and preparing and submitting the reasoned applications to join both cases dated 30 January 2014, for a total sum of PLN 7 169.30;
– commenting on the communication of 26 February 2014 in which the Court accepted the submission of a reply in both Case T‑449/13 and Case T‑450/13, and the preliminary work relating to the replies, for a total sum of PLN 7 386.09;
– analysis of the communications from the Court of 28 April 2014 in Cases T‑449/13 and T‑450/13, and commenting on this to the client, for a total sum of PLN 280.19;
– further work on preparing the replies to the responses submitted in Cases T‑449/13 and T‑450/13, and submitting the replies to the Court, for a total sum of PLN 6 672.55;
– analysis of and commenting on the communications from the Court of 5 August 2014 and the intervener’s rejoinder in Cases T‑449/13 and T‑450/13, for a total sum of PLN 1 010.47;
– preparing and submitting the reasoned applications of 12 September 2014 with a view to obtaining a hearing in Cases T‑449/13 and T‑450/13, for a total sum of PLN 2 350.33;
– analysis of the communications from the Court of 11 February 2015 in relation to the joinder of Cases T‑449/13 and T‑450/13, and preparing and submitting the observations of 26 February 2015 concerning that joinder, for a total sum of PLN 1 350.02;
– preparing for the hearing, preparing and sending draft pleadings to the Court’s interpreters, and participating in the hearing before the Court in Cases T‑449/13 and T‑450/13 (including the sum of PLN 3 419.00 for transport and accommodation expenses), for a total sum of PLN 32 643.02;
– analysis of and commenting on the judgments of the Court in Cases T‑449/13 and T‑450/13, for a total sum of PLN 2 603.66.
21 The intervener submits that, in the light of the purpose and nature of the proceedings, the fact that the work was not particularly complex, the relative amount of the work generated by the proceedings for the parties and, in particular, in view of the fact that the present case and Case T‑449/13 involved presenting the same arguments, the total number of hours charged is not objectively justified.
22 EUIPO submits, in essence, in particular with regard to the similarities between the present case and Case T‑449/13, that the amount which the applicant seeks to have reimbursed is excessive.
The costs incurred for the purposes of the proceedings before the Court
23 As a preliminary point, it is important to state that the applicant did not demand from EUIPO reimbursement of the costs relating to the proceedings in Case T‑449/13, and therefore no sum was paid in that respect by EUIPO to the applicant. In those circumstances, it is necessary to examine all of the costs for which reimbursement is sought.
24 In the first place, with regard to the costs sought in respect of lawyers’ fees, it is important to point out that the applicant seeks only reimbursement of the costs connected with the proceedings before the Court and not the costs incurred in the proceedings before EUIPO which were set by decision of 19 December 2016 of the Fourth Board of Appeal of EUIPO.
25 More particularly, in the present case, the applicant seeks reimbursement of PLN 33 500, being half of the fees invoiced in the sum of PLN 67 000 by its lawyers for legal services provided in the main proceedings in the present case and in the main proceedings in Case T‑449/13. Similarly, it claims that the recoverable costs in respect of the main proceedings in Case T‑449/13 should be set at PLN 33 500. Furthermore, it must be pointed out that, of the sum of PLN 67 000 claimed by the applicant in both sets of proceedings, the sum of PLN 3 419 relates to travel and accommodation expenses.
26 Thus it is necessary to examine whether, in view of the purpose and nature of the proceedings, their significance from the point of view of EU law, the complexity and difficulties presented by the case, the financial interest which the parties had in the proceedings and the amount of work carried out, an assessment of the costs claimed is justified.
27 First, with regard to the purpose and nature of the main proceedings and their complexity, it must be stated that the present case raised a question falling within the context of ordinary trade mark litigation, namely that relating to the likelihood of confusion for the purposes of Article 8(1)(b) and Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), raised in the course of invalidity proceedings against a European Union trade mark.
28 It is true that the facts of the present case were relatively complex in that they concerned the use and perception of marks comprising many word, figurative and three-dimensional elements. Moreover, the case required the organisation of a second round of pleadings and a hearing. However, contrary to what the applicant asserts, despite those aspects, the case, which did not concern a new legal question and did not have any particular significance as regards EU law, could not be regarded as having a high degree of complexity.
29 Secondly, with regard to the economic interests at stake, it should be noted that, in view of the significance of trade marks in trade, although the case had a specific economic interest for the applicant, the applicant did not submit to the Court any evidence that that interest could be regarded, in the present case, as unusual or significantly different from that on which any opposition proceedings brought against a European Union trade mark are based (see order of 7 February 2018, Scorpio Poland v EUIPO — Eckes-Granini Group (YO!), T‑745/15 DEP, not published, EU:T:2018:84, paragraph 19).
30 Thirdly, with regard to the amount of work which the proceedings may have generated for the intervener’s representative, it is important to recall that the primary consideration of the Court is the total number of hours of work which may appear to be objectively necessary for the purpose of the proceedings before the Court (see order of 12 January 2016, ANGIPAX, T‑368/13 DEP, not published, EU:T:2016:9, paragraph 15 and the case-law cited). Moreover, the ability of the Court to assess the value of work carried out is dependent on the accuracy of the information provided (see order of 28 June 2004, Airtours v Commission, T‑342/99 DEP, EU:T:2004:192, paragraph 30).
31 In this instance, the applicant produced, as an annex to its application for taxation of costs, 11 invoices showing the fees relating to the main proceedings in the present case and in Case T‑449/13. It must be noted in that regard that, as the applicant itself states, it is clear from those invoices that the applicant set out, for both sets of the main proceedings, costs in the total sum of PLN 82 495.56, corresponding to 118 hours 20 minutes of work. However, the applicant calculated the recoverable costs in the sum of PLN 67 000 for both sets of proceedings, that is to say, PLN 33 500 for the main proceedings in the present case, without specifying which invoices or which hours of work had to be taken into account for the purposes of its application for taxation of costs. From the invoices supplied by the applicant, it is therefore necessary to examine the hours of work that were objectively necessary for the purposes of the proceedings before the Court.
32 First, it must be stated that the law firm which represented the applicant already had extensive knowledge of the case as it had represented the applicant prior to the initiation of the main proceedings, during the proceedings before the Opposition Division and the Board of Appeal of EUIPO. This consideration is likely to have, in part, facilitated the work and reduced the time spent preparing the application and the reply (see, to that effect, order of 28 June 2004, Airtours v Commission, T‑342/99 DEP, EU:T:2004:192, paragraph 29 and the case-law cited). It follows from the case-law that the work carried out in the proceedings before the Board of Appeal reduces the scope of the work to be carried out before the Court, and consequently the amounts which may be recovered in this respect (order of 19 January 2016, Copernicus-Trademarks v OHIM — Blue Coat Systems (BLUECO), T‑685/13 DEP, EU:T:2016:31, paragraph 21 and the case-law cited).
33 Secondly, it must be noted, as is apparent from the invoices produced by the applicant in support of its application for taxation of costs, that the costs which it seeks to have reimbursed were set out jointly with those relating to Case T‑449/13. However, as the intervener maintains, both those cases involved presenting the same arguments. In that regard, the Court points out, first, that the applicant’s written pleadings in Cases T‑449/13 and T‑450/13 are almost identical and, secondly, that both those cases were joined for the purposes of the oral procedure.
34 Thirdly, as is apparent from the invoices, most of the work was carried out by an assistant lawyer whose hourly rate is EUR 130 and who was only supervised by a partner, whose hourly rate is EUR 200, who was also present at the hearing.
35 Fourthly, it is apparent from the annexes to the application for taxation of costs that the applicant’s lawyers devoted 118 hours 20 minutes, collectively, to the proceedings before the Court in Cases T‑449/13 and T‑450/13.
36 In the light of those findings, although it is true that the proceedings in the main action involved two exchanges of pleadings and a hearing, the Court nevertheless considers that 118 hours 20 minutes of work for the present case and for Case T‑449/13, invoiced by the applicant’s advisers, is excessive.
37 First of all, the Court finds that part of the hours worked were not objectively necessary for the main proceedings.
38 It must be observed that 4 hours 10 minutes were devoted to analysis of the Court’s judgments and drafting a commentary for the applicant. According to the case-law, costs relating to work done after the case has ended are not recoverable (see order of 29 November 2016, Brune v Commission, T‑513/16 DEP, not published, EU:T:2016:709, paragraph 35 and the case-law cited).
39 Similarly, the time devoted to putting the application in order by sending documents which should have been annexed to the application when it was filed cannot be regarded as necessary for the purposes of the proceedings (see order of 22 February 2010, Kronofrance v Commission, T‑27/02 DEP, not published, EU:T:2010:45, paragraph 47).
40 Next, with regard to the written phase of the proceedings, 25 hours 20 minutes, jointly for Cases T‑449/13 and T‑450/13, were devoted to the applications and 20 hours to the rejoinders. In the light of the findings made in paragraphs 32 to 35, such an hourly volume of work is excessive.
41 Furthermore, with regard to sending and receiving procedural documents and communicating with the Court, it must be observed that the number of hours devoted by the applicant’s advisers, in particular 2 hours 25 minutes of work to reply to the letter relating to the choice of language of the case or 4 hours 50 minutes for preparing an application for a hearing, do not appear to be justified. Similarly, 2 hours 10 minutes for actions connected with the Court’s question concerning joining the cases does not appear reasonable.
42 Finally, with regard to the preparation for and participation in the hearing, it is apparent from the invoices annexed to the application for taxation of costs that the applicant’s advisers devoted 44 hours, 10 of which were for each of the lawyers, to participating in the hearing in Joined Cases T‑449/13 and T‑450/13.
43 First, since the presence of a second lawyer, in view of the nature of the case, may not be regarded as necessary for the purposes of the applicant’s defence, only the costs of the presence of one lawyer constitute costs that are objectively necessary for the proceedings. Thus, the fact that the applicant decided to be represented by two lawyers does not permit it to seek recovery of the fees relating to the participation of a second lawyer (see, to that effect, order of 8 October 2014, Coop Nord v Commission, T‑244/08 DEP, not published, EU:T:2014:899, paragraph 33). In addition, it must be declared that, since the hearing lasted 1 hour 30 minutes, as the intervener rightly pointed out, a volume of 10 hours for participating in the hearing is disproportionate. Since it lasted only one and a half hours, the number of hours needed to participate in the hearing should not have exceeded two hours.
44 Secondly, 24 hours in order to prepare for the hearing appears excessive.
45 In those circumstances, bearing in mind the existence, in parallel, of Case T‑449/13 which was similar to the main proceedings, the costs of which are the subject of the present case, and which was brought on the same day by the same lawyer, the Court considers that the total costs recoverable by the applicant in respect of lawyer’s fees necessary for the purpose of the main proceedings may be assessed on an equitable basis at a total sum of PLN 35 000 for the present case and Case T‑449/13. Consequently, that sum must be divided in two in order to determine the recoverable costs to be declared in respect of the present case, which comes to PLN 17 500.
46 In the second place, with regard to the travel and transport expenses for the participation of both lawyers in the hearing, which came to PLN 3 419.40, the Court considers that the present case did not give rise to any specific circumstances justifying the expenses incurred in respect of two advisers, for the purpose of their participation in the hearing, to be regarded as necessary within the meaning of Article 140(b) of the Rules of Procedure. The fact that the applicant saw fit to divide the work necessary for its representation between two legal advisers cannot therefore be financially attributed to the opposing party (see order of 8 October 2014, Coop Nord v Commission, T‑244/08 DEP, not published, EU:T:2014:899, paragraph 33). It is therefore appropriate to accept only the expenses incurred for a single lawyer and to fix them at PLN 1 700. Since that figure covers the costs of the present case and Case T‑449/13, only half of that sum, that is to say, PLN 850, is recoverable in respect of costs incurred for the purposes of the main proceedings in the present case.
47 It follows from all of the foregoing considerations that the total costs recoverable by the applicant in respect of the proceedings before the Court can be assessed on an equitable basis at PLN 18 350.00 (approximately EUR 4 336.72).
Late payment interest
48 The applicant requests that the order requiring the intervener to pay the costs should include default interest from the date of service of the Court’s order until the date of actual payment.
49 In that regard, it must be stated that a finding, where appropriate, that there is an obligation to pay default interest and setting an applicable rate is within the Court’s jurisdiction pursuant to Article 170(1) to (3) of the Rules of Procedure (see order of 15 December 2016, Marcuccio v Commission, T‑229/13 P-DEP, not published, EU:T:2016:755, paragraph 31 and the case-law cited).
50 According to well established case-law, an application made in the course of proceedings for taxation of costs to add default interest to the amount due must be allowed for the period between the date of notification of the order of taxation of the costs and the date of actual recovery of the costs (see order of 27 April 2016, Marcuccio v Commission, T‑385/13 P‑DEP, not published, EU:T:2016:275, paragraph 32 and the case-law cited).
51 With regard to the applicable rate of interest, the Court considers it appropriate to take into account Article 83(2)(b) of Commission Delegated Regulation (EU) No 1268/2012 of 29 October 2012 on the rules of application of Regulation (EU, Euratom) No 966/2012 of the European Parliament and of the Council on the financial rules applicable to the general budget of the Union (OJ 2012 L 362, p. 1). Consequently, the applicable interest rate will be calculated, as requested by the applicant, on the basis of the rate applied by the ECB to its principal refinancing operations in force on the first calendar day of the month in which the deadline for payment falls, increased by 3.5 percentage points.
52 On the basis of all of the foregoing, the total costs recoverable by the applicant may be assessed on an equitable basis at PLN 18 350, to which sum default interest will be added from the date of service of the present order until the date of payment of the total amount owed.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1. The total amount of recoverable costs in Case T‑450/13 is set at 18 350 Polish zlotys (PLN).
2. Interest for late payment will be paid on the sum referred to in paragraph 1 from the date of service of the present order until the date of actual payment of the total sum due, at the rate set by the European Central Bank for its principal refinancing operations in force on the first day of the calendar month of the deadline for payment, increased by 3.5 percentage points.
Luxembourg, 21 September 2018.